Ex Parte Barker et al

Patent Trial and Appeal Board

Sep 28, 2016

11886739 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111886,739 0912012007
23117 7590 09/30/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Philip A Barker
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
RYM-36-2103 8422
EXAMINER
GRANT, AL VIN J
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
09/30/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP A. BARKER, PAUL M. ANDREWS,
GRAHAM A. LAIDLER, and KEITH E. NOLDE
Appeal2014-003676
Application 11/886,739
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
AMANDA F. WIEKER, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Philip A. Barker et al. (Appellants) 1 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1, 2, 4, 6, 8, 9, 11-25, and
27-32. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 British Telecommunications plc is identified as the real party in interest.
Appeal Br. 3.
Appeal2014-003676
Application 11/886,739
CLAIMED SUBJECT MATTER
Appellants' disclosure "relates to methods and apparatus for the
installation of telecommunications cables, in particular optical fibre installed
into pre-installed optical fibre tubes by 'blowing' techniques." Spec. 1, 11.
3-5. Claims 1, 11, 13, 20, and 23 are independent claims. Claim 1,
reproduced below, illustrates the claimed subject matter:
1. A blowing head for installing blown cable, comprising:
a low-inertia motor using electrical current, configured to
obtain the advance of the cable within the blowing head,
a low-inertia sensor configured to sense movement and
changes in the level of movement of the cable within the blowing
head, and
a control unit for controlling installation of the cable, the
control unit being configured to capture the level of the electrical
current required to start movement of the cable to calculate a cap
on the current level, and use the current level cap to prevent
excessive pushing on the cable by the motor during an
installation session.
Appeal Br. 17 (Claims App.).
REJECTION
Claims 1, 2, 4, 6, 8, 9, 11-25, and 27-32 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Barker (US 6,364,290 Bl, issued Apr. 2, 2002). 2
2 The heading of the rejection in the Non-Final Office Action also lists claim
26, which is cancelled. Non-Final Act. 2 (mailed April 11, 2013); Appeal
Br. 21 (Claims App.).
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Application 11/886,739
ANALYSIS
Claims 1, 2, 4, 6, 8, 9, 11-19, 30, and 31
The Examiner finds Barker discloses all limitations of claim 1,
including
a control unit (24) for controlling installation of the cable[,] the
control unit being configured to capture the level of the electrical
current required to start movement of the cable to calculate a cap
on the current level[,] and use the current level cap to prevent
excessive pushing on the cable by the motor during an
installation session.
Non-Final Act. 2.
Claim 11 recites "[a] system for installing cable into a cable tube"
comprising, inter alia, the same control unit limitation as claim 1. Appeal
Br. 18. The Examiner relies on the same findings in regard to the control
unit of claim 11 as those made for claim 1. Non-Final Act. 2.
Claim 13 recites "[a] blowing head for installing cable into a cable
tube" comprising; inter alia; a processor
configured to ... determine the level of current required
to start the movement of the cable; determine a cap on the level
of current based on the level of current required to start the
movement of the cable; and use the cap of the level of current to
prevent excessive pushing by the motor on the cable during
installation of the cable.
Appeal Br. 19 (emphasis added). The Examiner appears to rely on the same
findings in regard to the processor in claim 13 as those made for claim 1.
Non-Final Act. 2-3.
The Examiner states that "[i]t is noted that the intended use and
functional characteristics have not been given patentable consideration."
Non-Final Act. 2. This statement appears to refer to the limitations
associated with "for controlling" and "configured to" in claims 1, 11, and 13.
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Application 11/886,739
The Examiner also states that "Applicant is claiming the functional
characteristics of elements that are also disclosed by Barker. ... Thus, if a
prior art structure is capable of performing the intended use as recited in the
preamble, or elsewhere in a claim, then it meets the claim." Id. at 3--4
( emphasis added).
Appellants contend Barker does not disclose a control unit as recited
in claims 1 and 11 (Appeal Br. 10), or a processor as recited in claim 13
(id.). Appellants contend Barker does not disclose a current level cap based
on the level of current needed to get a cable moving, or teach or suggest
using the current level cap to prevent an excessive force on the cable during
an installation session. Id. at 10-11. Appellants contend the "configured to"
language in claims 1, 11, and 13 requires "a specific structural configuration
or a specific structural state/condition." Id. at 12. Appellants contend these
limitations must be given patentable weight. Id.
We agree with Appellants. The "capable of' test requires the prior art
structure to be capable of performing the function without further
programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,
1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v.
Tex. Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the claimed
functional language is associated with programming or some other structure
required to perform the function, that programming or structure must be
present in order to meet the claim limitation. Id. In the Final Office Action,
the Examiner does not establish Barker's control unit 24, as disclosed, is
"configured to capture the level of the electrical current required to start
movement of the cable to calculate a cap on the current level, and use the
current level cap to prevent excessive pushing on the cable by the motor
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Appeal2014-003676
Application 11/886,739
during an installation session (emphasis added)," as recited in claims 1 and
11, or configured to perform the functions of the processor recited in claim
13. The Examiner does not identify any disclosure in Barker that supports
this position, or otherwise explain how control unit 24 is capable of
performing the claimed functions associated with "configured to" without
further programming.
In the Answer, the Examiner provides additional findings relating to
the operation of the control unit and "processor" in Barker (Ans. 3--4), and
states the claim limitations associated with the "configured to" language
have been considered and are disclosed by Barker (id. at 6). Specifically,
the Examiner notes Barker discloses that "[t]he display unit also displays the
nominal installation speed of the cable, which is derived from the position of
the potentiometer that governs the motor drive current." Id. at 3 (emphasis
added) (citing Barker, col. 8, 11. 22-24). The Examiner interprets this
description to mean "there are limits put on the current through a variable
resistor (potentiometer)." Id. at 4. The Examiner also finds Barker discloses
the limitations of the processor recited in claim 13. Id. (citing Barker, col. 8,
11. 16-37; Fig. 5). The Examiner finds that "Barker discloses measures to
prevent excessive pushing force on the cable." Id. (citing Barker, col. 1, 11.
28--49).
In response, Appellants contend that "the control unit (24) in Barker
would do no more than what is described in column 9, lines 45--4 7, which is
to send an output signal to the data logger." Reply Br. 5 (emphasis added).
Appellants also contend "merely 'govem[ing] the motor drive current,"' as
disclosed at column 8, lines 16-37 of Barker, does not disclose "a current
level cap which is based on the level of current needed to get the cable
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Application 11/886,739
moving," or "using the current level cap to prevent an excessive force
(pushing) on the cable during a cable installation session." Id. at 6.
We are persuaded the Examiner has not shown by a preponderance of
the evidence that Barker discloses a control unit "configured to" perform
each of the limitations called for by claims 1 and 11, or a processor
"configured to" perform each of the limitations called for by claim 13. The
cited description at column 8, lines 16-37 of Barker pertains to ensuring that
"the actual installation speed of the cable is the same as the nominal
installation speed that is indicated by the display in accordance with the
positioning of the potentiometer by the operator of the blowing head."
Barker, col. 8, 11. 31-34.
At column 1, lines 28--49, Barker discloses (emphasis added):
The rate of the advance of the cable depends inter alia
upon the magnitude of the pushing force applied by the drive
wheels, friction and the amount of viscous drag available (which
depends upon the applied gas pressure, cable diameter, duct size
and length and installed cable length). Typically the rate of
installation in any given situation is controlled by the operator
simply controlling the amount of pushing force applied by the
motor. Because any given blowing head can typically be used
with a range of cable diameters, it is common for the blowing
head motor to be able to provide more pushing force than a
relatively small cable can withstand without buckling. Normally
the desire is to use the fastest possible installation rate while
avoiding buckling and the motor control is adjusted to provide
this. As those skilled in the art will understand, in practice a
given cable will start to buckle under different conditions
depending upon its free length, the pulling force provided by
viscous drag, friction, duct diameter, duct geometry, etc. Thus,
in practice the machine operator needs to stay with the blowing
head in order to monitor the blowing process and to ensure that
buckling is avoided, at least if a reasonable installation rate is to
be achieved.
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Application 11/886,739
This description indicates that normally it is desirable "to use the fastest
possible installation rate while avoiding buckling." Id. This description also
indicates that a machine operator can control the pushing force applied by
the motor to control the installation rate. Id. However, this description does
not disclose a control unit "configured to" perform each of the limitations
called for by claims 1 and 11, or a processor "configured to" perform each of
the limitations called for by claim 13.
We do not sustain the rejection of claims 1, 11, and 13, or dependent
claims 2, 4, 6, 8, 9, 12, 14--19, 30, and 31, as anticipated by Barker.
Claims 20-22 and 32
Claim 20 is directed to "[a] method for installing blown cable in an
installation session using a blowing head having a motor." Appeal Br. 20
(Claims App.). The Examiner finds:
Barker, in disclosing the apparatus, inherently discloses
the claimed method steps. Under the principles of inherency, if
a prior art device, in its normal and usual operation, \'l/ould
necessarily perform the method claimed, then the method
claimed will be considered to be anticipated by the prior art
device. When the prior art device is the same as a device
described in the specification for carrying out the claimed
method, it can be assumed that the device will inherently perform
the claimed process.
Non-Final Act. 3 (citinginreKing, 801F.2d1324 (Fed. Cir. 1986); MPEP
§ 2112.02) (emphasis added).
Appellants contend Barker fails to disclose the method steps of claim
20. Appeal Br. 13-14; Reply Br. 6-7. The method of claim 20 comprises,
inter alia, steps of "determining the level of current for starting the
movement of the cable," "setting a cap on the level of current to be used by
the motor during the installation session, based at least partly on the
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Application 11/886,739
determined level of current for starting the movement of the cable," and
"operating the motor, using the cap on the level of current, to install the
cable during the installation session to prevent excessive pushing on the
cable by the motor during the installation session." Appeal Br. 20 (Claims
App.) (emphasis added). For reasons similar to those discussed above in
regard to claims 1, 11, and 13, we are persuaded the Examiner has not
established, by a preponderance of the evidence, that Barker's apparatus
inherently (i.e., necessarily) performs each of the method steps of claim 20.
Accordingly, we do not sustain the rejection of claim 20, or dependent
claims 21, 22, and 32, as anticipated by Barker.
Claims 23-25 and 27-29
Claim 23 recites a blowing head for installing cable comprising, inter
alia, "a low-inertia sensor comprising two drive wheels which lightly touch
each other or do not touch each other, configured to sense movement and
changes in the level of movement of the cable within the blowing head."
Appeal Br. 21 (Claims App.). Appellants indicate support for this limitation
is found at page 10, lines 10-14 of the Specification, which states that "the
two drive wheels only lightly touch each other - indeed they may not touch
at all." Id. at 14-15. According to Appellants, "[t]he sensing wheels obtain
their low-inertia characteristic from this lightness (or absence) of touch on
each other." Id. at 15. Appellants contend that:
The light or non-existent contact between the drive wheels in
claim 23 is clearly distinguishable from that of the cited Barker
blowing head, in which, as discussed on the page 10, lines 14-
16 of the original specification, "the drive wheels of the prior art
blowing head which tightly engage each other, impart[ing] a
'crushing force' (emphasis added)."
Id. at 15.
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Application 11/886,739
The Examiner responds that "Appellant argues (at page 15, lines 2 and
3) of the Arguments that '[t]he sensing wheels obtain their low-inertia
characteristic from this lightness (or absence) of touch on each other.['] The
light contact is indefinite." Ans. 6.
The description at page 10, lines 14--16 of Appellants' Specification
pertains to "the drive wheels of the prior art blowing head." This description
does not identify the "prior art" as Barker. Nonetheless, Appellants'
contentions are persuasive. First, the Examiner has not rejected claim 23 as
being indefinite. Second, the Examiner does not identify any disclosure in
Barker of a low-inertia sensor that comprises drive wheels that "lightly touch
each other or do not touch each other," construing "lightly touch" in light of
the Specification. Accordingly, the Examiner has not established by a
preponderance of the evidence that Barker discloses a blowing head as
recited in claim 23. Thus, we do not sustain the rejection of claim 23, or
dependent claims 24, 25, and 27-29, as anticipated by Barker.
DECISION
We reverse the Examiner's decision rejecting claims 1, 2, 4, 6, 8, 9,
11-25, and 27-32.
REVERSED
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